ORDER OF THE COURT (Fifth Chamber)

10 September 2020 ([\*](#Footnote*))

(Appeal – Community design – Invalidity proceedings – Declaration of invalidity – Appeal which has become devoid of purpose – No need to adjudicate – Costs)

In Case C‐320/18 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 14 May 2018,

**Crocs** **Inc.,** established in Niwot (United States), represented by J. Guise and D. Knight, Solicitors, and H. Haouideg, avocat,

appellant,

the other parties to the proceedings being:

**European Union Intellectual Property Office (EUIPO),** represented by J. Ivanauskas and H. O’Neill, acting as Agents,

defendant at first instance,

**Gifi Diffusion,** established in Villeneuve-sur-Lot (France), represented by C. de Chassey, avocate,

intervener at first instance,

THE COURT (Fifth Chamber),

composed of E. Regan, President of the Chamber, I. Jarukaitis, E. Juhász, M. Ilešič (Rapporteur) and C. Lycourgos, Judges,

Advocate General: G. Pitruzzella,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to rule by reasoned order, pursuant to Article 149 of the Rules of Procedure of the Court of Justice, applicable to appeal proceedings by virtue of Article 190 of those rules,

makes the following

**Order**

1        By its appeal, Crocs Inc. asks the Court of Justice to set aside the judgment of the General Court of 14 March 2018, *Crocs* v *EUIPO* – *Gifi Diffusion (Footwear)* (T‐651/16, not published, EU:T:2018:137; ‘the judgment under appeal’), by which the General Court dismissed the action brought by Crocs against the decision of the Third Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 6 June 2016 (Case R 853/2014-3), relating to invalidity proceedings between Gifi Diffusion and Crocs (‘the decision at issue’).

**Background to the dispute and the judgment under appeal**

2        The background to the dispute was set out as follows by the General Court in paragraphs 1 to 8 of the judgment under appeal:

‘1      On 22 November 2004, Western Brands LLC filed an application for registration of a Community design with [EUIPO], pursuant to Council Regulation (EC) No 6/2002 of 12 December 2001 on Community designs (OJ 2002 L 3, p. 1), claiming the priority of a US design patent application filed on 28 May 2004.

2      The goods to which the contested design is intended to be applied are in Class 02-04 of the Locarno Agreement of 8 October 1968 establishing an International Classification for Industrial Designs, as amended, and correspond to the following description: “Footwear”.

3      The contested design was registered as Community design No 257001-0001 and published in *Community Designs Bulletin* No 9/2005 of 8 February 2005.

4      On 3 November 2005, the contested design was transferred to the applicant, Crocs.

5      On 20 March 2013, the intervener, Gifi Diffusion, filed an application for a declaration of invalidity of the contested design with EUIPO pursuant to Article 52 of Regulation No 6/2002, claiming that it lacked novelty, inter alia. In that regard, the intervener argued that the novelty of the contested design was destroyed because it had been disclosed by the applicant prior to 28 May 2003, that is to say prior to the 12-month period preceding the date of priority put forward for the purpose of Article 7(2)(b) of Regulation No 6/2002; the date of priority is defined as the date of filing of the application for a US design patent by the applicant, namely 28 May 2004. According to the intervener, disclosure took place by means of (i) exhibition at a boat show in Fort Lauderdale, Florida (United States); (ii) the sale of 10 000 pairs of clogs; and (iii) disclosure on the applicant’s website (http://www.crocs.com). In support of its assertions, the intervener produced the following evidence, inter alia:

–        a printout from the applicant’s website as accessible on 25 November 2002 (“Exhibit 2”);

–        a printout from the applicant’s website as accessible on 13 December 2002 (“Exhibit 3”);

–        a printout from the applicant’s website showing, according to the intervener, that the clog corresponding to the contested design had been put on the market in July 2002 and exhibited in November 2002 at the Fort Lauderdale Boat Show and that, “by 2003, Crocs had become a bona fide phenomenon, universally accepted” (“Exhibit 4”);

–        a printout from the applicant’s website showing a clog with a heel strap and marked “© 2003” (“Exhibit 5”).

6      On 13 February 2014, the Invalidity Division dismissed the application for a declaration of invalidity on the ground that the disclosure of the earlier designs had not been demonstrated. It found, inter alia, that the documents submitted by the intervener were not sufficient evidence of prior disclosure of the contested design because Exhibit 2 was not dated and Exhibits 3 to 5 were of poor quality.

7      On 27 March 2014, the intervener filed a notice of appeal with EUIPO, pursuant to Articles 55 to 60 of Regulation No 6/2002, against the decision of the Invalidity Division. In support of its appeal, the intervener produced the following evidence, inter alia:

–        a printout from a website presenting the 2002 Fort Lauderdale Boat Show as an international fair (“Exhibit 9”);

–        a printout from the applicant’s website showing that the clog corresponding to the contested design had been displayed in November 2002 at the Fort Lauderdale Boat Show (“Exhibit 10”);

–        a printout from the applicant’s website showing that, on 13 December 2002, a clog corresponding to the contested design had been disclosed on that website (“Exhibit 16”);

–        a printout from the applicant’s website showing that, on 25 November 2002, a clog corresponding to the contested design had been disclosed on that website (“Exhibit 17”);

–        a printout from the applicant’s website showing that clogs corresponding to the contested design had been put on sale as early as December 2002 (“Exhibit 19”);

–        a printout from the applicant’s website listing the retailers for clogs corresponding to the contested design (“Exhibit 20”);

–        a further printout from the applicant’s website showing that clogs corresponding to the contested design had been put on sale as early as December 2002 (“Exhibit 21”).

8      By [the decision at issue], the Third Board of Appeal of EUIPO annulled the Invalidity Division’s decision and declared the contested design invalid. In its decision, the Board of Appeal held that (i) the relevant date for the purpose of assessing whether prior disclosure of the contested design had taken place (“the relevant date as determined by the Board of Appeal”) was 28 May 2003, the contested design had been disclosed prior to that date and, therefore, it lacked novelty for the purpose of Article 5 of Regulation No 6/2002; (ii) Exhibits 16 and 17 were not new evidence but better versions of previously submitted Exhibits 3 and 2, which were completed and corroborated by Exhibits 10 and 19 to 21, so it was appropriate to take all those exhibits into account; (iii) those exhibits show that the contested design had been exhibited and used in trade – and hence made available to the public – before the relevant date as determined by the Board of Appeal in so far as Exhibits 10, 16 and 17 proved that clogs corresponding to the contested design had been displayed on the applicant’s website, given that Exhibit 10 shows that the exhibition of the clogs at the Fort Lauderdale Boat Show had been “a smashing success” and Exhibits 10 and 19 to 21 proved that the clogs had been available for sale; (iv) the circumstances surrounding the disclosure of the contested design on the internet for the declared purpose of advertising and selling clogs corresponding to that design were such that the contested design could reasonably have become known in the normal course of business to the circles specialised in the sector concerned, operating within the European Union; (v) the design disclosed on the applicant’s website was the same as the contested design; and (vi) accordingly, that disclosure of the contested design had destroyed its novelty for the purpose of Article 5 of Regulation No 6/2002, with the result that it must be declared invalid, without there being any need to examine other evidence or grounds for invalidity.’

3        By application lodged at the Registry of the General Court on 14 September 2016, Crocs sought annulment of that decision. In support of its action before the General Court, Crocs put forward two pleas in law alleging, first, infringement of Article 63(2) of Regulation No 6/2002 and, secondly, infringement of Article 7 of that regulation.

4        By the judgment under appeal, the General Court dismissed the action and ordered Crocs to pay the costs.

**Procedure before the Court**

5        By application lodged at the Registry of the Court of Justice on 14 May 2018, Crocs brought the present appeal. In support thereof, Crocs relied on four grounds of appeal, claiming (i) infringement of Article 63 of Regulation No 6/2002; (ii) infringement of Article 61 of that regulation; (iii) infringement of Article 7 of that regulation; and (iv) irregular composition of the Chamber of the General Court which delivered the judgment under appeal.

6        By decision of the President of the Court of Justice of 29 January 2019, the proceedings were stayed in the present case, pursuant to Article 55(1)(b) of the Rules of Procedure of the Court of Justice, until delivery of the judgment of 26 March 2020, *Review Simpson* v *Council* and *HG* v *Commission* (C‐542/18 RX‐II and C‐543/18 RX‐II, EU:C:2020:232).

7        The parties were invited, in accordance with Article 62(1) of the Rules of Procedure, to submit observations on the possible effect on the fourth ground of appeal of the judgment referred to in the preceding paragraph of the present order. Neither Crocs nor Gifi Diffusion submitted observations, while EUIPO lodged its own observations within the time limit prescribed.

8        By letter of 17 June 2020, Crocs and Gifi Diffusion jointly informed the Court that, following an amicable settlement between those parties, Gifi Diffusion had, on 12 June 2020, withdrawn its application for a declaration of invalidity of the Community design at issue. The parties stated that, accordingly, there was no longer any need to adjudicate on the present appeal, and requested that they each bear their own costs.

9        By letter of 30 June 2020, EUIPO stated that it did not oppose a ruling that the present appeal proceedings are now devoid of purpose and that there is no longer any need to adjudicate. EUIPO requested, moreover, that it not be ordered to pay the costs.

**Concerning appeals**

10      It should be noted, at the outset, that an appellant’s interest in bringing appeal proceedings presupposes that the appeal must be likely, if successful, to procure an advantage for it (order of 12 December 2019, *Vans* v *EUIPO*, C‐123/19 P and C‐125/19 P, not published, EU:C:2019:1088, paragraph 20 and the case-law cited).

11      In the present case, none of the parties has claimed any interest in pursuing the present proceedings.

12      Moreover, it should be noted that Crocs and Gifi Diffusion have reached a settlement pursuant to which the latter has withdrawn its application for a declaration of invalidity of the Community design at issue.

13      As that application has been withdrawn, as it follows from Article 55(1) read in conjunction with Article 60(3) of Regulation No 6/2002, before the decision at issue took effect and became final, it must be held that, on account of that withdrawal, that decision has become inoperative (see, by analogy, orders of 12 April 2018, *Cryo-Save* v *EUIPO*, C‐327/17 P, not published, EU:C:2018:235, paragraph 15, and of 12 December 2019, *Vans* v *EUIPO*, C‐123/19 P and C‐125/19 P, not published, EU:C:2019:1088, paragraph 23).

14      In those circumstances, as the present appeal has become devoid of purpose, there is no need to adjudicate on it.

**Costs**

15      Under Article 149 of the Rules of Procedure, applicable to the procedure on appeal pursuant to Article 190 thereof, where a case does not proceed to judgment, the Court is to give a decision as to costs.

16      In accordance with Article 142 of those rules, applicable to the procedure on appeal pursuant to Article 184(1) thereof, costs are, in such a case, to be in the discretion of the Court, subject, however, to the provisions of Article 184(2) to (4) of those rules.

17      In the present case, there is no need to adjudicate as a settlement has been reached between Crocs and Gifi Diffusion. It follows that the fact that there is no need to adjudicate is attributable to the appellant and the intervener at first instance.

18      Moreover, the procedure before the Court has entailed a written stage, in which Gifi Diffusion participated. Furthermore, Crocs and Gifi Diffusion have requested that they each bear their own costs.

19      Accordingly, it is appropriate to decide that Crocs shall bear its own costs and pay those incurred by EUIPO in the present proceedings, and that Gifi Diffusion shall bear its own costs incurred in the same proceedings.

20      Moreover, it is not for the Court to rule on the costs relating to the proceedings at first instance, since there is no need to rule on the present appeal and since, therefore, the judgment under appeal has not been set aside.

On those grounds, the Court (Fifth Chamber) hereby orders:

1.      **There is no need to adjudicate on the appeal.**

2.      **Crocs Inc. shall bear its own costs and pay those incurred by the European Union Intellectual Property Office (EUIPO) in the present appeal proceedings.**

3.      **Gifi Diffusion shall bear its own costs incurred in these proceedings.**

Luxembourg, 10 September 2020.

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| A. Calot Escobar | | E. Regan |

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| Registrar | | President of the Fifth Chamber |

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[\*](#Footref*)      Language of the case: English.